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tech transfer

June 13, 2014

Yesterday Elon Musk of Tesla Motors put up this blog post, in which he is apparently trying to say that as long as he's in charge, Telsa won't enforce any of its patents, because he wants to encourage others to develop sustainable transportation. (That reading of it seems to be consensus among tech business writers, such as Will Oremus at Slate.)

Inasmuch as none of the big automakers are trying to copy Tesla or even make a serious run at the non-hydrocarbon burning vehicle market, a point that Musk makes in his post, there seems to be little downside to taking this stance, and far be it for me to second guess his business strategy. As a lawyer, however, I ask myself if his promise is backed up by action. For example, by dedicating Tesla's patents to the public, something that can be done through the USPTO.

A quick, non-exhaustive sample out of the over 100 US patents issued to Tesla Motors indicates that so far, such a step hasn't been taken. For instance, as of this writing, US 8421469 is still listed in the assignment listings as being owned by Tesla Motors, and there is nothing in PAIR showing that the patent has been dedicated to the public. Same thing for US 7741750, which was renewed last year, (and along with ownership by Tesla Motors shows with a security interest on record to Midland Loan Services, Inc.) Ditto for US 7404720. The same attorney, with his address given as Tesla's Palo Alto addressm, is listed as the contact person for all three patents.

I do not doubt Mr. Musk's sincerity, and perhaps his online statements would be construed by a court as constituting a dedication the public, or an offer for a non-royalty bearing license, or a covenant not to sue. But until there's something in the record of the patents themselves to corroborate his statements, it's hard not to advise a client thinking of using technology covered by Tesla's patents to obtain written permission to do so before proceeding. Then again, as my brother the US patent litigator noted, the announcement says "Tesla will not *initiate* lawsuits against anyone who, in good faith, wants to use our technology", language which implies that Tesla wants to reserve the right to sue if sued, or if it feels someone is using the technology for purposes that Tesla doesn't approve of. So this statement may be all that we see from Tesla on the matter.

On the humorous side, for those of you who remember Highland Applicance (of blessed memory), the title of his post, "All Our Patent Are Belong To You", reminds me of this classic commercial:

January 08, 2014

Today Don Zuhn at PatentDocs posted about a report from the National Academy of Inventors and the Intellectual Property Owners Association, which lists the universities worldwide that received the most U.S. utility patents in 2012. The University of California tops the list with 357 patents; last on the list is Seoul National University Industry Foundation with 18 patents. Of the top 100, most of the non-US universities are located in the Far East (27). There is only one entry for a European university (Ecole Polytechnique, Federale de Lausanne, coming at 94th place with 20 patents) and one entry for the King Fahd University of Petroleum and Minerals in Saudi Arabia with 57 patents. The tech transfer companies of the Technion, Weizmann Institute, Hebrew University and Tel-Aviv University all made the list, with 30, 35, 30 and 37 patents, respectively.

While numbers of patents per se aren’t necessarily a measure of the patentee’s successful contributions to commerce, it’s nevertheless impressive that Israel, with a population significantly smaller than those of any of the other countries represented on the list (unless one counts Hong Kong as separate from China), and which has to devote a larger proportion of its budget to defense than the other countries, has four universities on the list (out of seven Israeli universities total). And according to this slideshow, and this news article, and this publication, Hebrew U. (Yissum), Weizmann (Yeda) and Technion have licensing revenues on par with those of the leading US universities.